Can I File an International Trademark if I Only Have a Supplemental Registration?

In the evolving global marketplace, securing your brand’s identity in multiple jurisdictions has never been more important. Business owners are often eager to obtain international trademark protection as they expand their operations abroad. These international business owners often share a common question: “Can I file an international trademark if I only have a supplemental registration?” 

The Basics: Principal vs. Supplemental Register

Before delving into international trademarks, it’s essential to understand the distinction between the U.S. Principal and Supplemental Registers. (maybe link to the principal vs supplemental registry blog post)

Principal Register: This is the primary register that trademark applicants aim for. Being on the Principal Register confers several advantages, such as a presumption of ownership and validity and the ability to become “incontestable” after five years of continuous use .

Supplemental Register: Reserved for descriptive marks, surnames, geographic terms, and other marks not eligible for the Principal Register but can potentially acquire distinctiveness over time. While this register offers fewer protections, it still provides some benefits like using the ® symbol.

Madrid Protocol and International Trademarks

To file an international trademark, many businesses utilize the Madrid Protocol – an international treaty that facilitates trademark registration in multiple countries through a single application. Along with the United States, there are over 190 other member countries.

Can a Supplemental Registration Be Used for an International Application?

Both Principal and Supplemental Registrations can serve as a foundation for seeking international trademark protection. You can indeed use a U.S. supplemental registration as the basis for an international application under the Madrid Protocol – but there is an important caveat: the target country must recognize and have equivalent laws for protecting descriptive marks.

What Can I Do If I Only Have a Supplemental Registration and Don’t Qualify in My Country of Choice?

Holding a supplemental registration in the U.S. can be advantageous for many reasons. But what happens if you’re seeking protection in a country that doesn’t recognize the U.S. Supplemental Registry? Below are the steps you can take:

• Apply for a Principal Registration: If your branding scenario has shifted since your initial application, such as increased consumer recognition or other unique changes, you might qualify for the Principal Register. In particular, after having been on the Supplemental Registry for five years, there’s a heightened chance that your mark has acquired distinctiveness.
• File Directly in the Desired Country: The Madrid Protocol does make international registration more straightforward. However, if there are complications due to the type of registration you have, direct application in the target country is an option. Be prepared for this to be more cumbersome, as each country has its set of procedures, fees, and requirements. Moreover, coordinating with a local attorney in that jurisdiction might be necessary.
• Consult a Trademark Attorney: Your brand’s trajectory is distinct. A consultation with a seasoned trademark attorney can offer bespoke insights and strategies that cater specifically to your brand’s needs and aspirations.

International Trademark Registration Process: A Brief OverviewFor those keen on understanding the broader landscape of international trademark protection, we have an in-depth article on the international filing process. It dives deep into the intricacies of the Madrid Protocol, country-specific requirements, and offers strategies for brand owners aiming for a global footprint.

Conclusion

With strategic planning and the right guidance, businesses can chart a course to secure their brand identity across borders. For questions about the trademark registration process or international brand protection, please reach out to us for a consultation.